DETAILED ACTION
This Office Action is in response to the Amendment filed on 8/3/2026.
Claim(s) 1-15, are now pending in the application.
The previous 35 USC 112(a) rejections of claim 1 is withdrawn in light of Applicant’s amendment and remarks.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-15 are rejected under 35 U.S.C. 103 as unpatentable over US5543489 to Alex et al.
Regarding Claim 1, 4, and 5, Alex teaches a composition based on thermoplastic elastomers [Abstract] comprising 90 parts of a PEBAX (polyether block amide) [Example 1] (i.e., 75-98% copolyetherester) as a block copolymer [Col.1, lines 64-67] comprising PTMG [Col.4 Lines 30-35] which is considered hydrophilic (reading on Polymer A, (a1)). Alex further teaches 10 parts terpolymer [Example 1] comprising ethylene/acrylic ester/maleic anhydride comprising a ratio of 68% ethylene / 30% acrylic ester / and 2% maleic anhydride [Col.4 lines 37-43] reading on 10 parts copolymer B comprising ethylene, alkyl (meth)acrylate / and an anhydride. Alex further teaches 0% of at least one additive relative to the weight of the composition. The Example 1 of Alex only contains the polyetheresteramine at 90 parts and the terpolymer at 10 parts thereby reading on the “consisting of” language as required by the instant claim.
Alex does not teach in this particular embodiment that the copolyetherester consists of only polyester blocks and polyether blocks.
However, Alex teaches the thermoplastic elastomer block copolymer comprises polyether blocks and blocks selected from the group consisting of polyamide blocks and polyester blocks [abstract] e.g., the thermoplastic elastomer contains both polyether blocks and polyester blocks [Col1, L64-66] (i.e., polyetheresters) or the thermoplastic elastomer contains both polyamide blocks and polyether blocks [col2, L43-45] (polyetheresteramide).
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute the copolyetherester consisting of polyester blocks and polyether blocks for the polyetheresteramide of Example 1. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06). Alex discloses that both polyetheresters and polyetheresteramide are suitable thermoplastic elastomers for use in compositions based on a thermoplastic elastomer, thus providing evidence of obviousness in substituting one for the other in such compositions.
Alex does not explicitly state the copolyetherester polymer is hydrophilic.
However, the property of hydrophilicity is a function of the copolymer. Alex teaches the same copolymer comprising polyester blocks and polyether blocks as set forth in the rejection above. Therefore, the hydrophilic nature of the copolymer of Alex will be the same hydrophilicity as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Alex is silent regarding the composition is configured to form a waterproof-breathable film having a water vapor transmission rate of at least 700 g/m2/24 hours.
The recitation of “is configured to form a waterproof-breathable film” are process steps for using the composition and therefore do not limit the claimed subject matter, which is directed to the composition itself. Case law has held that a recitation with respect to the manner in which a claimed apparatus is intended to be used does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations Ex Parte Masham, 2 USPQ2d 1647 (1987). Alex teaches the same composition having the same claimed structural limitations, therefore would satisfy the claimed manner in which the composition is used.
Regarding Claims 2 and 3, Alex teaches the composition of claim 1, comprising a commercially available copolymer such as LOTADER from Elf Atochem S.A. [Example 1] wherein LOTADER comprises ethyl acrylate or butyl acrylate.
Regarding Claim 6, Alex teaches the composition of claim 1, comprising maleic anhydride [Example 1] i.e., an unsaturated dicarboxylc acid anhydride.
Regarding Claim 7, Alex teaches the composition of claim 1, wherein the anhydride can comprise unsaturated glycidylic monomer acid anhydride [Col.4, line 1-4] reading on an unsaturated epoxide function.
Regarding Claim 8, Alex teaches the composition of claim 1, wherein copolymer B is free of units derived from vinyl acetate.
Regarding Claim 9, Alex teaches the composition of claim 1, comprising 0% additive chosen from inert dyes.
Regarding Claim 10, 12, and 13, Alex teaches the method of manufacturing an article by extrusion or hot molded [claim 10] such as the composition of claim 1 made into a film [Col.4, line 23].
Regarding Claim 11, Alex teaches the process in claim 10 as set forth above and incorporated herein by references.
Alex is silent regarding the extrusion temperature.
However, case law has held that differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters. Where the principal difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that difference (see Ex parte Khusid, 174 USPQ 59).
Regarding Claim 14, Alex teaches the film of claim 13, wherein the film is at least 100 microns [Col.4, line 23].
Regarding Claim 15, Alex teaches the film as claimed in claim 14.
Alex is silent regarding the use of the film.
However, case law has held that a recitation with respect to the manner in which a claim apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex Parte Masham, 2 USPQ2d 1647 (1987). Since Alex teaches the same film obtained by the same process as set forth in the rejection above, then the film taught by Alex is considered to meet the structural limitations and thereby read on the intended use of the film as required by the claim.
Response to Arguments
Applicant's arguments filed 8/3/2026 have been fully considered but they are not persuasive.
Applicant states Alex does not disclose or suggest the newly amended claimed composition as Alex only exemplifies polyetherimide systems and Alex does not disclose or suggest compositions waterproof-breathable film or the newly amended MVTR performance.
Alex teaches the thermoplastic elastomer block copolymer comprises polyether blocks and blocks selected from the group consisting of polyamide blocks and polyester blocks [abstract] e.g., the thermoplastic elastomer contains both polyether blocks and polyester blocks [Col1, L64-66] thereby teaching (a1) consisting of polyester blocks and polyether blocks.
Attention is drawn to the updated rejection of claim 1 wherein Alex teaches the instantly claimed composition wherein the MVTR performance is inherently present.
Applicant states there is not motivation to modify Alex.
In response, attention is drawn to the rejection of claim 1 as set forth above wherein it would have been obvious to a person of ordinary skill in the art to substitute the copolyetherester consisting of polyester blocks and polyether blocks for the polyetheresteramide of Example 1. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06). Alex discloses that both polyetheresters and polyetheresteramide are suitable thermoplastic elastomers for use in compositions based on a thermoplastic elastomer, thus providing evidence of obviousness in substituting one for the other in such compositions. Moreover, A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123).
In response to applicant's argument that Applicant further states the claimed subject matter and Alex are directed to different technical problems, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant states Hydrophilicity and polyether content are not taught or inherent.
In response, Examiner agrees that the Hydrophilicity of Alex’s copolyetherester is not explicitly stated. However, Alex, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts (e.g., polyester blocks and polyether blocks with an unspecified ratio) by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. Hydrophilicity - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Additionally, Alex teaches the polyether units of polyethylene glycol with a molar mass of 250-6000 g/mol [Col 1, L64 – Col 2, L 4]. As such, it is reasonably expected that the thermoplastic elastomer comprising polyether and polyester units is hydrophilic.
Moreover, Alex teaches PEBAX [Example 1] wherein grades of PEBAX are hydrophilic [https://www.ulprospector.com/plastics/en/datasheet/274759/pebax-mv-1074-sa-01-med].
Applicant states that Alex does not teach the composition is configured to form a waterproof-breathable film.
In response, attention is drawn to the updated rejection of claim 1 wherein Alex teaches the instantly claimed composition.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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